Ex Parte 6923387 et alDownload PDFPatent Trial and Appeal BoardMay 24, 201890013791 (P.T.A.B. May. 24, 2018) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 90/013,791 08/08/2016 6923387 141953.00301 5774 136404 7590 05/24/2018 Pepper Hamilton LLP/Boston Attn: Boston IP Docketing Department 125 High Street 19th Floor Boston, MA 02110-2736 EXAMINER FETSUGA, ROBERT M ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 05/24/2018 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ORBITAL AUSTRALIA PTY LTD1 Appellant, Patent Owner ____________________ Appeal 2018-002197 Reexamination Control 90/013,791 Patent No. US 6,923,387 B22 Technology Center 3900 ____________________ Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and KEN B. BARRETT, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL 1 Orbital Australia Pty Ltd, as the owner, and Orbital Fluid Technologies Inc., as a licensee, are the real parties in interest (Appeal Brief (hereinafter “App. Br.”) 1). 2 Issued August 2, 2005 (hereinafter “the ’387 patent”). Appeal 2018-002197 Reexamination Control 90/013,791 Patent No. US 6,923,387 B2 2 The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 306 from a Final Rejection of original claim 6, and claims 20–30, newly added during this proceeding, which ultimately depend from claim 6 (App. Br. 2). We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. In addition to the Appeal Brief, the Patent Owner also relies on a Reply Brief (hereinafter “Reply Br.”), and a Declaration of Dr. Christopher White dated January 30, 2017 (hereinafter “Decl. White”). Because this evidence is referred to in the briefs and Answer, we cite to the portions of the briefs and Answer where this evidence is discussed. An Oral Hearing with the Patent Owner’s representative was held before the Patent Trial and Appeal Board on May 9, 2018, a transcript of which will be entered into the electronic record in due course. We are informed that claims 1, 2, 4, 5, 7–10, 13–16, 18, and 19 of the ’387 patent were previously canceled by the Patent Office as a result of inter partes reviews IPR2015-012543, IPR2015-01255, and IPR2015-01256 (App. Br. 1). We are further informed that the ’387 patent is the subject of litigation styled Orbital Australia Pty Ltd et al v. Daimler AG et al, Case No. 2:15-cv-12398 (E.D. Mich.), which has been stayed (App. Br. 1). The invention is directed to an injector nozzle for a fuel injected internal combustion engine (Abst.). Claim 6 ultimately depends from canceled claims 1 and 5. Claim 6, rewritten in independent form for 3 In IPR2015-01254, the Petitioner asserted that most of the claims of the ’387 patentare anticipated by Sczomak, but did not set forth any analysis as to claim 6. Hence, the Inter Partes Review instituted did not include claim 6. See IPR2015-01254, Institution of Inter Partes Review (Paper 9), 2 n.1; see also Petition (Paper 3) 29. Appeal 2018-002197 Reexamination Control 90/013,791 Patent No. US 6,923,387 B2 3 convenience,4 with deletions in double brackets, together with the recitations of claims 1 and 5 in single brackets, reads as follows (App. Br. 20 (emphasis added)): 6. An injector nozzle [[according to claim 5,]] [for a fuel injected internal combustion engine, said injector nozzle including a port having a valve seat surface and valve member having a seating surface, said valve member being movable relative to the port to respectively provide a nozzle passage between the valve seat surface and the seating surface for the delivery of fuel there-through or sealed contact there-between to prevent said delivery of fuel, the valve member including an outer valve surface located adjacent the seating surface and external to the port, wherein a sharp edge is provided on the valve member at the transition between the seating surface and the outer valve surface thereof, for controlling the formation of deposits at or adjacent an exit of the nozzle passage; wherein the port includes an outer port surface surrounding and located adjacent to the valve seat surface, and a sharp edge is provided at the transition between the valve seat surface and the outer port surface;] wherein the angle between the valve seat surface and the outer port surface of the port at the sharp edge transition is at least substantially 90 degrees. REJECTIONS 1. The Examiner rejects claims 6, 20, 21, 23, 24, 26–28, and 30 under 35 U.S.C. § 102(b) as anticipated by Sczomak (US 4,693,424, iss. Sept. 15, 1987). 2. The Examiner rejects claims 6, 20–22, 25–28, and 30 under 35 U.S.C. § 103(a) as unpatentable over Sczomak in view of 4 Claim 6 has not been amended during this reexamination proceeding. Appeal 2018-002197 Reexamination Control 90/013,791 Patent No. US 6,923,387 B2 4 Masubuchi et al., (JP 04-30266, pub. Mar. 11, 1992 (hereinafter “Masubuchi”) (citations to the English translation of record). 3. The Examiner rejects claim 29 under 35 U.S.C. § 103(a) as unpatentable over Sczomak in view of Caley (US 5,551,638, iss. Sept. 3, 1996). We REVERSE. ISSUES The following issues have been raised in the present appeal. 1. Whether the Examiner erred in interpreting claim 6 and its recitation of “at least substantially 90 degrees.” 2. Whether the Examiner erred in finding that Sczomak discloses “at least substantially 90 degrees.” ANALYSIS Claim Construction The Patent Owner and the Examiner disagree as to the meaning of the limitation “at least substantially 90 degrees” in claim 6. The Examiner initially states that claim construction of this limitation is not required in view of its plain wording that “defines uncomplicated subject matter.” (Final Act. 5; see also Ans. 7). Nevertheless, the Examiner determines that this claim limitation could not reasonably be interpreted to encompass obtuse angles because the Specification of the ’387 patent “lack[s] support . . . when taken as a whole.” (Final Act. 6). In that regard, the Appeal 2018-002197 Reexamination Control 90/013,791 Patent No. US 6,923,387 B2 5 Examiner determines that “a ‘sharp edge’ formed by surfaces oriented at ‘obtuse angles’ would appear an unreasonable interpretation when considering the edges 20, 25 associated with the inventive embodiments depicted in FIGS. 3 and 4 in [the ’387 patent] (col. 7, 11. 12-29).” (Final Act. 7; see also Ans. 8). Accordingly, “[i]t is the examiner’s position that the claim terminology ‘at least substantially 90 degrees’ would not exclude an acute angle (i.e. less than 90 degrees), especially when that language is interpreted in light of the [’387 patent’s] disclosure,” but “interpretation of the noted claim terminology which includes an obtuse angle would be inconsistent with the [’387 patent’s] disclosure.” (Ans. 5). The Patent Owner disagrees and argues that the Examiner’s reasoning “conflates the distinction . . . between the micro-level radius of curvature (i.e., ‘sharpness’) at the transition between adjacent surfaces and the macro- level geometric angle between the same adjacent surfaces.” (App. Br. 9). The Patent Owner argues that the plain language of the claim encompasses angles greater than 90º, i.e., obtuse angles (App. Br. 8), and that the Examiner’s interpretation does not “attribute any meaning whatsoever to the claim’s recitation of ‘at least.’” (App. Br. 9). The Patent Owner argues that the claim also “encompass[es] certain acute angles (namely, those acute angles that are only slightly less than 90 degrees.” (Reply Br. 2). The Patent Owner further points out that claim 6 was originally filed so that this claim language is part of the Specification (see generally Reply Br. 10). We agree with the Patent Owner. The claim language is clear that the angle between the recited surfaces are “at least substantially 90 degrees,” thereby reciting an angular range that encompasses both less than, and Appeal 2018-002197 Reexamination Control 90/013,791 Patent No. US 6,923,387 B2 6 greater than, 90º. While the recitation “at least” specifically sets forth a minimum angle, the recitation “substantially” also places a limit on this minimum angle. As the Patent Owner points out, this claim was filed with the original application that issued as the ’387 patent, and thus, is part of the original disclosure, and is not inconsistent therewith as the Examiner determines. The Examiner’s exclusion of obtuse angles appears to ignore the “at least” recitation of claim 6 as argued by the Patent Owner, and the fact that claim 6 is part of the original disclosure. Accordingly, we interpret claim 6 to encompass any angle that is “at least substantially 90º,” whether that angle is acute or obtuse. The Patent Owner also relies on evidence in the form of declaration testimony of Dr. White to interpret what “substantially” means to one of ordinary skill in the art when referring to an angular dimension (App. Br. 7– 8). In particular, Dr. White declares that: In light of the ’387 Patent specification’s discussion of “machining” the port and valve member to have the recited characteristics, for example, via lapping or grinding of various surfaces (see e.g., col. 3, 11. 17-27 and col. 6, 1. 63 through col. 7, 1. 11, and col. 7, 11. 30-34), a person of ordinary skill in the art would have understood the term “at least substantially 90 degrees” within the meaning of the ’387 Patent to be an angle that is within standard machining tolerances of 90 degrees. (Declaration of Christopher White, dated January 30, 2017 (hereinafter “Decl. White”) ¶ 16). Dr. White refers to machining tolerances promulgated by ISO, which is the International Organization for Standardization, and declares that “a machinist would understand that even the largest permissible deviation of an Appeal 2018-002197 Reexamination Control 90/013,791 Patent No. US 6,923,387 B2 7 angular dimension having an unspecified tolerance (i.e., in the tolerance class ‘very coarse’) would only be ± 3°.” (Decl. White ¶ 17). Accordingly, the Patent Owner argues that a person of ordinary skill in the art would understand that “the lower bound of the claimed angle between the surfaces would be no smaller than 87 degrees” (App. Br. 8). The Examiner peripherally addresses the meaning of the term “substantially” to one of ordinary skill in the art and the testimony of Dr. White relied upon by the Patent Owner in the context of addressing obtuse angles, stating that Dr. White’s testimony and reasoning is: not commensurate with the [’387 patent’s] disclosure (nor with the prior art) in that the level of skill in the fuel injector nozzle art would not be restricted to a person who is simply familiar with standard tolerances associated with various machining processes. In this regard, the desired result of ‘reducing droplet impingement’ on nozzle surfaces is not dependent upon machining tolerances.” (Final Act. 6 (citing ’387 patent col. 7, ll. 35–56); see also Ans. 7–8). Initially, we do not agree with the Declarant’s apparent assertion that a person of ordinary skill in the art is a “machinist,” and agree with the Examiner that a person of ordinary skill would not be restricted to a person having familiarity with standard tolerances associated with machining. Instead, in view of the applied prior art of record, we find that a person of ordinary skill is a mechanical engineer with experience in designing fuel injectors. (See generally Sczomak, col. 6, ll. 32–45; Caley, col. 1, ll. 26–40, col. 3, ll. 7–16, col. 5, ll. 35–39). Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); Union Carbide Corp. v. American Can Co., 724 F.2d 1567, 1573 (Fed. Cir. 1984). Appeal 2018-002197 Reexamination Control 90/013,791 Patent No. US 6,923,387 B2 8 Nevertheless, in view of the disclosure in the ’387 patent as well as the disclosures of Sczomak and Caley with respect to angular dimensions, and to lesser extent, the disclosure of Masubuchi, it is evident by preponderance of the evidence, including the declaration of Dr. White, that a person of ordinary skill in the art of fuel injector design would have been familiar with, and mindful of, machining tolerances in manufacturing of a fuel injector and its components. In that regard, although the desired result of reducing droplet impingement may or may not be dependent upon machining tolerances, that does not diminish the need for understanding what the term “substantially” recited within claim 6 means to a person of ordinary skill in the art in view of the Specification of the ’387 patent. The Examiner further determines that: The argued terminology of claim 6 is related to matters of degree rather than to a technical aspect. The words “at least substantially” are not restricted to use in the fuel injector art. Moreover, the words “at least substantially” are relative, and in the context of claim 6 can be readily reconciled with the invention described in [the ’387 patent]. (Ans. 8). While we agree with the Examiner that the term “at least substantially” is a term of degree, is not restricted to the fuel injector art, and is consistent with the invention described in the Specification, such considerations point to the importance of determining what the term means to a person of ordinary skill in the art and in the context of fuel injector design because terms of degree vary depending on the art and context in which the term is used. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)(Claims are to be given their broadest reasonable Appeal 2018-002197 Reexamination Control 90/013,791 Patent No. US 6,923,387 B2 9 interpretation consistent with the specification, reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art.); cf. Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984) (When a claim uses a word of degree, like “substantially,” the Specification must be examined to determine whether some standard for measuring that degree is provided and whether one of ordinary skill in the art would understand what is claimed when the claim is read in light of the Specification). The Examiner’s analysis does not adequately address what the claim term “substantially” means to one of ordinary skill in the art of fuel injector design. Accordingly, in view of the somewhat limited evidence before us, we find persuasive, Dr. White’s testimony that “substantially” recited in claim 6 would be understood by one of ordinary skill in the art in the context of machining tolerances. As noted, Dr. White’s testimony also referred to and relied upon a specific source of machining tolerance specification, namely ISO, and in particular, the “very coarse” tolerance of ±3º set forth in ISO-2768-1 (Decl. White ¶ 17; see also id. at App’x. B; Reply Br. 5–7)). It is not entirely clear why the “very coarse” tolerance would be applicable instead of some tighter tolerance specification such as “fine,” which is ±1º, or “medium,” which is ±1º30’. (Id.). We understand Dr. White’s testimony to be relying on the “very coarse” tolerances as “the largest permissible deviation” associated with the term “substantially.” (Decl. White ¶ 17.) In that regard, Dr. White also declares that “a person skilled in the art would appreciate that fuel injector nozzles generally require high-precision machining (i.e., very tight tolerances).” (Decl. White ¶ 17; see also App. Br. 8). Nevertheless, as will Appeal 2018-002197 Reexamination Control 90/013,791 Patent No. US 6,923,387 B2 10 be evident from the discussion infra as to the prior art rejections, the selection of the “very coarse” tolerance is inconsequential. Thus, for the reasons discussed above, we adopt the Patent Owner’s claim construction that the limitation “substantially 90 degrees” means an angle that is at least 87º to one of ordinary skill in the art of fuel injector design for the purposes of this appeal. Rejection 1: Anticipation by Sczomak The Examiner rejects claims 6, 20, 21, 23, 24, 26–28, and 30, finding that “[t]he port edge [of Sczomak] is ‘at least substantially 90 degrees.’” (Final Act. 3). Specifically, the Examiner finds that the “substantially 90 degrees” limitation “does not distinguish the angles illustrated in Figs. 3–5 in Sczomak. In Figs. 3–5, the angle defined by surfaces 43/44 [between valve seat surface and chamfer on the valve] is physically measurable and is very close to 90°.” (Final Act. 7–8). The Examiner explains that the Specification of Sczomak also discloses that surfaces 30 and 44 are substantially parallel, that the differential angle between surfaces 27 and 43 should be about or less than 2 degrees, and that surfaces 27 and 30 define a knife edge (Final Act. 8; see also Ans. 13). Based thereon, the Examiner finds that: when considering the teachings in Sczomak, it is reasonably apparent that an approximately 88° “knife edge” angle defined by surfaces 27/30 would result. Compared to claim 6, the 88° angle clearly satisfies the “at least substantially 90 degrees” requirement. (Final Act. 8). Appeal 2018-002197 Reexamination Control 90/013,791 Patent No. US 6,923,387 B2 11 The Patent Owner disagrees and observes that the Examiner appears to rely on the drawings of Sczomak, but argues that such reliance is improper because its drawings are not disclosed as being to scale, and in fact, are disclosed as being not to scale (App. Br. 10; see also id. at 14; Reply Br. 14). The Patent Owner further argues that “the explicit purpose of Sczomak’s drawings were to show the general configuration of features, not to provide any measurable lengths or angles of these features,” and that “such measurements plainly fail to account for, and indeed contradict, Sczomak’s corresponding disclosure that geometrically constrains the possible ranges of angles schematically depicted in the drawings.” (App. Br. 14). In particular, the Patent Owner relies on analysis set forth by Dr. White concluding that based on the particular angles disclosed in the text of Sczomak’s specification, the pertinent angle is actually 74º + 0.15’ to 79º + 0.15’, which is clearly not “at least substantially 90 degrees.” (App. Br. 12– 13; see also Decl. White ¶¶ 23–26). We generally agree with the Patent Owner because it is speculative as to whether Sczomak actually discloses that the angle between valve seat surface 27 and outer port surface 30 is “at least substantially 90 degrees” as interpreted above. The Examiner explains that: anticipation of claim 6 is not based upon the Sczomak illustrations being drawn to scale. . . . Instead, anticipation is based upon the Sczomak description as embodied in the drawing figures. (Final Act. 8). The Examiner further explains that: Appeal 2018-002197 Reexamination Control 90/013,791 Patent No. US 6,923,387 B2 12 the outstanding anticipation rejection is not attempting to rely upon either “precise proportions” or “particular sizes”. Instead, the “very close to 90°” measurement (Final Office Action at 8) was made simply to confirm that the angle defined by surfaces 27/30, as clearly depicted in Figs. 4 and 5 in Sczomak, was indeed acute and near 90°. (Ans. 12–13). Therefore, while the Examiner’s rejection in the Final Action is based on the angle between valve seat surface 43/chamfer 44 of Sczomak and its disclosure of 2º difference between valve seat surface 43 and valve seat 27, the Answer appears to also alternatively rely on the illustrated angle between valve seat 27 and chamfer 30 of the port itself. As to the latter position, it is clear that the Examiner is relying on Figures 4 and 5 of Sczomak. Although drawings can be relied upon for what they reasonably disclose and suggest to one of ordinary skill in the art, see In re Aslanian, 590 F.2d 911, 914 (CCPA 1979); In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972), it is also clear, and there is no dispute between the Patent Owner and the Examiner, that Figures 4 and 5 of Sczomak illustrate an acute angle formed between the pertinent surfaces (see Sczomak, Figs. 4, 5). As such, the question in view of the above discussed claim interpretation is whether Figures 4 and 5 of Sczomak can be said to actually disclose the pertinent angle as being at least 87º, i.e., whether such angle is determinable from the figures. We answer that in the negative and disagree with the Examiner’s finding to the contrary. As noted by the Patent Owner, patent drawings not designated as being drawn to scale cannot be relied upon to define precise proportions of elements if the specification is completely silent on the issue. Hockerson- Appeal 2018-002197 Reexamination Control 90/013,791 Patent No. US 6,923,387 B2 13 Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000). While we are not persuaded by the Patent Owner’s arguments based on Sczomak’s disclosure that Figures 4 and 5 are enlarged, exaggerated sectional views, because it is clear that the referenced exaggeration is with respect to maximum overlap between the seat and the valve (Sczomak, col. 2, ll. 20–24; col. 4, ll. 2–7), Sczomak does not disclose that the pertinent angle is to scale. Indeed, it is not evident what the angle between the pertinent surfaces is without measuring Figures 4 and 5 of Sczomak, which is improper in view of the lack of indication that these figures are drawn to scale. According to the Examiner: the inclusion therewith of the degree modifier “substantially” would normally indicate that claim 6 clearly encompasses acute angles (i.e. less than 90 degrees) and is not restricted to obtuse angles. Brief at 13. Consequently, even under the claim construction implied in the Brief, claim 6 would not distinguish the acute angle defined by surfaces 27/30 as depicted in Figs. 4 and 5 in Sczomak. MPEP 2125 (Drawings and pictures can anticipate claims if they clearly show the structure which is claimed.) (Ans. 11). However, this line of reasoning does not take into consideration of the meaning of “substantially” to one of ordinary skill in the art as discussed above. We also do not discern an adequate basis for the Examiner’s assertion that the Specification of Sczomak and these figures discloses an angle that is “approximately 88º.” (Final Act. 8). This assertion is based on Sczomak’s disclosure that: Appeal 2018-002197 Reexamination Control 90/013,791 Patent No. US 6,923,387 B2 14 Preferably the differential angle between the included angles of the valve seat 27 and that of the valve seat surface 43, should be about or preferably less than 2°, whereby sealing will always occur at least at the outer edge of the valve seat 27 or at the outer edge of the valve seat surface 43 and, preferably at both their outer annular edges. (Sczomak, col. 4, ll. 23–29). As noted, the Examiner’s rejection is that because Sczomak discloses that surfaces 30 and 44 are substantially parallel and that the differential angle between surfaces 27 and 43 should be about or less than 2 degrees (Final Act. 8; see also Ans. 13), the pertinent angle between valve seat surface 27 and chamfer 30 must be approximately 88º. This line of reasoning is also fundamentally premised on determining that the angle between valve seat surface 43 and chamfer 44 is 90º based on the drawings of Figures 4 and 5 (see Final Act. 8 (“[i]n Figs. 3–5, the angle defined by surfaces 43/44 is physically measurable and is very close to 90º.”)). Significantly, in this articulation of the rejection, the Examiner selectively relies on the 2º difference between valve seat surface 43 and valve seat 27 as disclosed in Sczomak, while ignoring the additional disclosure of 149º angling of valve seat 27 and 151º angling of valve seat surface 43 within the same paragraph of Sczomak (Sczomak, col. 4, ll. 23– 32), which Dr. White testifies, results in an angle of 74º + 0.15’ to 79º + 0.15’ (App. Br. 12 see also Decl. White ¶ 24). The Examiner’s rejection does not reconcile the disclosed angling of valve seat 27 and valve seat surface 43, with the disclosed 2º difference between them. Finally, the Examiner’s explanation that “the determined 74-79° range for angle [between valve seat surface 27 and the outer port surface 30] Appeal 2018-002197 Reexamination Control 90/013,791 Patent No. US 6,923,387 B2 15 simply reflects one of many embodiments which would be encompassed by the Sczomak disclosure.” (Final Act. 9–10; see also Ans. 12). While that may or may not be correct, that reasoning does not adequately address the limitation “at least substantially 90 degrees” as interpreted above. Therefore, in view of the above considerations, we reverse this anticipation rejection of claim 6. In so doing, we need not determine what the angle disclosed in Sczomak actually is, because it is sufficient to determine that the Examiner failed to establish that Sczomak discloses “at least substantially 90 degrees” as claimed. The Patent Owner also relies on dependency on claim 6 for patentability of claims 20, 21, 23, 24, 26–28, and 30 (App. Br. 15). Accordingly, this anticipation rejection of these dependent claims are reversed as well. Rejection 2: Obvious in View of Sczomak and Masubuchi The Examiner rejects claims 6, 20–22, 25–28, and 30 as unpatentable over the combination of Sczomak and Masubuchi (Final Act. 4). In addition to the findings relative to Sczomak, the Examiner also finds that: Masubuchi teaches a fuel nozzle comprising a port 9 including a seat surface 10 and an outer surface 14 which together form a sharp edge having an acute angle ß. . . . The acute angles reduce the adherence of fuel, and consequently, control the formation of fuel deposits (pg. 5, 11. 3–12). (Final Act. 4). The Examiner concludes that “it would have been obvious to one of ordinary skill in the fuel nozzle art to associate an acute angle with the seat and outer surfaces of both the port and the valve member in Sczomak (to the extent not already present), in order to further reduce and/or control the Appeal 2018-002197 Reexamination Control 90/013,791 Patent No. US 6,923,387 B2 16 formation of fuel deposits.” (Final Act. 4–5). The Examiner finds that “both disclosures are concerned with utilizing a sharp edge(s) to control fuel deposits” so Masubuchi does not teach away from the suggested combination (Final Act. 11). The Patent Owner relies on arguments submitted with respect to Sczomak (App. Br. 17), and argues that “the Examiner’s reliance on Masubuchi does not cure the deficiencies of the rejection based on Sczomak alone” because it fails to disclose the “at least substantially 90 degrees limitation of claim 6 (App. Br. 15), and that “both Sczomak and Masubuchi disclose that the relevant angle should be acute in order to obtain the benefits purportedly provided by their respective nozzles.” (App. Br. 16). According to the Patent Owner, Masubuchi’s disclosure that providing an acute angle reduces the formation of fuel deposits “only serves to reaffirm Sczomak’s provision of an acute angle between the relevant surfaces, and further demonstrates that a person skilled in the art would be led away” from the angle recited in claim 6 (App. Br. 18). We generally agree with the Patent Owner that the Examiner’s reliance of Masubuchi does not address the deficiencies discussed with respect to Sczomak. In that regard, in addition to Masubuchi’s teaching with respect to acute angles, Figure 2 thereof discloses an even more acute angle between the port outer surface and the valve seat surface than that of Sczomak (compare Masubuchi, Fig. 2 with Sczomak Figs. 4, 5). Accordingly, if anything, the combination of these references appears to suggest making Sczomak’s pertinent surfaces more acute, contrary to the claim language that requires the pertinent angle to be “at least substantially Appeal 2018-002197 Reexamination Control 90/013,791 Patent No. US 6,923,387 B2 17 90 degrees.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.”). The Examiner’s articulated reason for the rejection does not provide any further basis to make the pertinent angle to be “at least substantially 90 degrees,” and thus, is insufficient. Therefore, in view of the above considerations, we reverse this rejection relative to claim 6. The Patent Owner relies on dependency on claim 6 for patentability of claims 20–22, 25–28, and 30 (App. Br. 18). Accordingly, this obviousness rejection of these dependent claims are reversed as well. Rejection 3: Claim 29 The Examiner rejects claim 29 as unpatentable over Sczomak and Caley (Final Act. 5). The Patent Owner relies on dependency on claim 6 for patentability of claim 29 (App. Br. 19). The Examiner merely relies on Caley for disclosing a projection as recited in claim 29, and does not remedy the deficiencies discussed above relative to Sczomak and Masubuchi (Final Act. 5). Therefore, this rejection of claim 29 is also reversed. CONCLUSION Rejections 1–3 are REVERSED. REVERSED Copy with citationCopy as parenthetical citation